Ex Parte Ziegler et al 10/837,755 SCHEINER 112(2)/103(a) CROWELL & MORING LLP Examiner Name: SASAN, ARADHANA [A] disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support.

In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971).

Marzocchi, In re, 439 F.2d 220, 169 USPQ 367 (CCPA 1971) . . . 2107.01, 2107.02, 2124, 2163, 2163.04, 2164.03, 2164.04, 2164.08 “[I]t is incumbent upon the Patent Office . . . to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement.” Id. at 224. In other words, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification . . . this includes . . . providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement.

The Doyle decision distinguishes between the circumstance where subject matter sought on reissue could not have been prosecuted originally, e.g., because of a restriction requirement, and the circumstance where subject matter, e.g., a linking claim, could have been sought in the original application. Doyle, 293 F.3d at 1361. Doyle explains that a linking claim is distinguishable from claims precluded by the Orita doctrine if the linking claim could have been prosecuted in the application from which it was restricted. “The so-called Orita doctrine [] precludes a reissue applicant from obtaining substantially identical claims to those of nonelected groups identified in an examiner’s restriction requirement when such claims could not have been prosecuted in the application from which they were restricted.” Id. at 1359 (emphasis added). The Doyle court thus distinguished the Orita doctrine on the ground that Doyle’s “linking claims not only could have but should have been prosecuted with the elected group.” (Id. at 1360, emphasis in original.)